Solicitor General Tells SCOTUS CAFC Got it Wrong in American Axle, Recommends Granting

“As the splintered separate opinions at the panel and rehearing stages illustrate, the Federal Circuit is deeply divided over the proper application of this Court’s framework, and the content of that framework is central here.” – Brief of U.S. Solicitor General United States Solicitor General has recommended granting review in American Axle & Manufacturing v. Neapco Holdings, a case many in the patent community hope will provide clarity on U.S. patent eligibility law. The Supreme Court asked for the views of the Solicitor General in May of 2021 and the response has been highly anticipated.

The SG’s brief says that inventions like the one at issue in American Axle have “[h]istorically…long been viewed as paradigmatic examples of the ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied” and that the U.S. Court of Appeals for the Federal Circuit “erred in reading this Court’s precedents to dictate a contrary conclusion.”

The brief explains in no uncertain terms that claim 22 of the patent at issue in the case does not “simply describe or recite” a natural law and ultimately should have been held patent eligible.

American Axle filed a petition for certiorari with the Supreme Court on December 28, 2020, following the U.S. Court of Appeals for the Federal Circuit’s July 2020 modified judgment and October 2019 panel opinion affirming the district court’s ruling that American Axle’s claims directed to driveshaft automotive technology were ineligible under Section 101. Judge Moore dissented, saying that “the majority’s decision expands § 101 well beyond its statutory gate-keeping function and the role of this appellate court well beyond its authority.”

American Axle is asking the Supreme Court to consider the following questions:

  1. What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
  2. Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?

The SG recommends granting the petition as to question 1 “as framed in this brief.” The Court often follows the advice of the SG regarding whether or not to grant a petition.

The brief rejects Neapco’s argument that the petition should be denied because the case was decided “after full fact and expert discovery” and the decision “factbound and narrow.” The SG says: “As the splintered separate opinions at the panel and rehearing stages illustrate, the Federal Circuit is deeply divided over the proper application of this Court’s framework, and the content of that framework is central here.”

While Neapco suggested dealing with eligibility law in a software or life sciences case, the SG says:

[I]n applying Section 101 to the more traditional industrial manufacturing method at issue here, the Court can more readily draw on historical practice and precedent to clarify the governing principles, which can then be translated to other contexts.

With respect to the second question presented in the petition, the SG recommends first dealing with question one, since “[t]he answer to that satellite procedural question depends on the substantive Section 101 standard…. The Court accordingly should grant review on the first question presented…[and] [i]f necessary, it may then address, in this case or a future one, whether applying that standard entails a legal, factual, or hybrid analysis.”

IPWatchdog will have more on the SG’s brief in the coming days and weeks and when the Court decides whether to grant or reject the petition.

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Join the Discussion

15 comments so far.

  • [Avatar for B]
    July 5, 2022 02:53 pm

    @ Greg “I tip my hat to the Biden administration for advancing this position.”

    Respectfully, what position?

  • [Avatar for B]
    May 27, 2022 11:38 am

    @ concerned “Never mind, your honor, the person
    is innocent per the overwhelming evidence, send him to the electric
    chair anyway per the past rulings!”

    You forgot: “. . . and we won’t even tell you which rulings”

  • [Avatar for concerned]
    May 27, 2022 07:13 am

    Model 101:

    At my CAFC oral hearing the Asst. Solicitor did not touch the merits of the case, or the evidence, and did not offer any definitions for inventive concept or significantly more. Her argument to the panel was basically “This court has ruled in this fashion in the past, so it must rule the same way again.”

    Good thing I was not on trial for a capital offense. The Asst. Solicitor’s argument may have been “Never mind, your honor, the person is innocent per the overwhelming evidence, send him to the electric chair anyway per the past rulings!”

    Is the electric chair mental steps?

  • [Avatar for Model 101]
    Model 101
    May 26, 2022 02:32 pm

    The whole 101 mess is pretty clear.

    It’s meant to keep valid patents and big infringement defendants out of court.

    SCOTUS understands this and endorses it.

    They are basically crooks.

    Should the facts matter…duh!

    What a bunch of nonsense from the Solicitor general!

  • [Avatar for Anon]
    May 25, 2022 08:22 pm

    It should be noted that Mr. Cole’s push towards a 102 argument only indirectly resolves the 101 issue as patent eligible.

  • [Avatar for Paul Cole]
    Paul Cole
    May 25, 2022 09:41 am

    Readers should download and study DE-A-3632418 (BMW). For those with little knowledge of German, the esp@cenet database includes an automatic translation facility by which the description, claims and abstract can be straightforwardly and rapidly translated. It will be seen that bending, torsional and wall vibrations of a drive shaft can all be damped by the disclosed structures.

    It will be noted that this reference was missed both by the USPTO and by the EPO. One explanation may be that although the abstract refers to the incorporation of a damping mass which may consist of a tuning mass and an absorber mass into the hollow drive shaft, the abstract makes no reference to multi-mode damping.

  • [Avatar for B]
    May 25, 2022 08:51 am

    @ Night Writer

    I so obviously agree 100,000,000% with everything you said.

    The thing I cannot believe is that the knuckleheads who wrote that waste of virtual PDF are people in power who, instead of applying critical analysis, are just feeding the Supreme Court’s worst delusions and most inept analyses back to the Supreme Court.

  • [Avatar for concerned]
    May 25, 2022 08:49 am

    Night Writer:

    Ignorance or hidden agenda?

    PTAB and Solicitor are calling my process mental steps when professionals and experts could not even do the steps physically. Tossing evidence is a deliberate act, not ignorance.

    At least the USPTO examiners did not ignorantly state mental steps, even after the January 2019 USPTO guidances were published (Examiner’s response to Appeal Brief dated September 2019). Of course, the examiners apparently were reading the official record, not attempting to blindly stab on a book report without reading the book.

  • [Avatar for Night Writer]
    Night Writer
    May 25, 2022 07:43 am

    My take: probably this increases the chances that the Scotus will take cert and hear the case. But I think it is unlikely that they will take guidance from this rambling brief.

    My own opinion is that this isn’t the best case to go up to the Scotus as it has lots of oddities about it including the record at the EPO is not good. Plus, I am pretty sure that the CAFC generated a new reference in the opinion and yet this wasn’t even mentioned. Plus, there are other cases where 112 wasn’t relevant where 101 was used on a physical device.

    Finally, I would say that what strikes me is that most of what is driving our problems is unbelievable ignorance. People that understand computers and information processing know that information processing is a physical process as much as this axel is a physical device. Information processing takes space, time, and energy and those claims that are allegedly abstract actually read on a family of physical objects that perform information processing methods.

    Anyway, the ignorant ridiculous America marches on with more “science” right out of Medieval Europe (and politics too.)

  • [Avatar for Model 101]
    Model 101
    May 25, 2022 06:53 am

    Could be worse.

    Better than expected.

  • [Avatar for concerned]
    May 25, 2022 06:11 am

    Common people find it unbelievable when I tell them in the patent world “legal setting” evidence does not seem to matter, except when rejecting an application or adversely ruling against the patent holder.

    What sets my application apart is evidence from every possible end user, all 50 of them, that demonstrates my claims have never been done individually or collectively.

    Plus evidence that the claims could not be done mentally, the current art could not solve the problem physically. Free will: A person cannot mentally “will” people to consent, to cooperate, to not commit fraud.

    I am hoping Axle will provide clarity and direction. However, no amount of clarity is going to stop people from reading the claims and drawing/acting on their own opinions, evidence notwithstanding.

    And Bingo! One gets an Asst. Solicitor who basically argues at oral hearing that the courts have ruled this (bad) way in the past, therefore, the courts have to rule this (bad) way again despite the evidence and despite the Asst. Solicitor will probably not take the $500,000 mental steps challenge.

    Axle? The wheels have already fallen off!

  • [Avatar for B]
    May 25, 2022 02:00 am

    My official opinion on the Solicitor’s brief


    Government In, Garbage Out

    One long unstructured rambling of the last 100 years of failed garbage spewed by the courts – filled with some accuracies but embedded with trash. They could have taken pages 12, 20, and another two pages, and said everything that needed saying. Four instances of the phrase “inventive concept” without a hint as to what the phrase means.

    Otherwise, I see a bunch of children running the DOJ and PTO who cannot even distinguish 101 from 112(a) and 112(f) despite spending combined centuries working in the patent field.

    The ending is spectacular: Tell us what abstract is, but not if it involves talking about the evidence issue. Twenty-seven pages of your tax dollars burnt.

    Maybe I’m wrong, but I think the SCOTUS was hoping for guidance as opposed to a mere recitation of known 101 failures devoid of critical analysis.

  • [Avatar for Pro Say]
    Pro Say
    May 24, 2022 09:37 pm

    The year is 2023 . . .

    Will the innovation-scorching Alice be living here anymore?

  • [Avatar for B]
    May 24, 2022 08:11 pm

    Imma print out the Solicitor’s recommendation and read it while pumping iron. I’ll enlighten and annoy everyone with my opinions later.

    I look forward to the discourse by the usuals here

    @ Greg: The DoJ really doesn’t take direction from the White House on this. Their job is to merely take an inexcusable pro-government stance. FYI, the DoJ actually semi-recommended taking cert on In re Villena in 2019 even as the DoJ lied about a string of case law. Cert. never happened.

    Here’, b/c the gov’t isn’t a party, the DoJ isn’t motivated to be total dorks. There’s still no guarantee that the SCOTUS will take cert., and I won’t be surprised if they don’t.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    May 24, 2022 06:49 pm

    I tip my hat to the Biden administration for advancing this position. Much more like the Obama administration’s position in Myriad than their position in Alice.